Wise Payments Limited v Bitwise Asset Management, Inc

[2024] ATMO 239

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Wise Payments Limited to registration of trade mark application 2167015 (9, 35, 36) – BITWISE – in the name of Bitwise Asset Management, Inc.

Delegate:	Nicholas Smith
Representation:	Opponent: Andrew Sykes, Counsel, instructed by Adrian M Trioli Patent and Trade Mark Attorney Applicant: Lucy Davis, Counsel instructed by Maria Sun of Ashurst Australia
Decision:	2024 ATMO 239 Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 44 and 60 considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Wise Payments Limited (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Bitwise Asset Management, Inc. (‘Applicant’): 

Application Number:	2167015
Filing Date[1]:	29 March 2021
Goods and Services:	Class 9: Computer terminals; computer hardware Class 35: Accounting; accountancy Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; advisory services relating to finance; currency exchange services; management of finances; acquisition for financial investment; administration of investments; advisory services relating to investments; capital fund investment; capital investment; capital investment advisory services; consultancy services relating to investment; financial investigation services; financial investment; insurance investigations; investing of funds; investment; investment account services; investment advice; investment analysis; investment consultancy; investment information; management of investments; monitoring of investment funds; brokerage services; electronic commerce payment services; automated payment services; financial payment services; issuing of tokens of value, electronic cash, virtual currency, digital currency, cryptocurrency, digital tokens and blockchain tokens; Financial services, namely, offering and administering open ended unit investment trusts; financial services, namely, investment management services and financial information provided by electronic means; investment advisory services and related services in the field of cryptocurrency, namely, cryptocurrency investment advisory services; investment management and financial consultation services in the field of cryptocurrency; financial risk management; financial asset management services; financial asset evaluation; investment services, namely, management in the field of cryptocurrency, and the investment of funds of others; investment advisory services; financial investment research; financial research; preparation of financial reports for others and financial analysis related thereto; providing financial information in the field of investment opportunities and financial analysis; online financial services, namely, investment fund transfer and transaction services and financial research; providing financial and investment services, namely, financial information based on different asset class indices; financial services, namely, creating, designing, sponsoring, offering, operating and administering products which are traded on an exchange, namely, cryptocurrencies; financial and investment advisory services; rating services regarding performance of investments and regarding credit worthiness; providing and updating financial indexes; financial data and research; providing trading services for virtual currency, digital currency, cryptocurrency, digital tokens and blockchain tokens; electronic payment services involving electronic processing and transmission of payment data for virtual currency, digital currency, cryptocurrency, digital tokens and blockchain tokens; financial calculation services for others; operating an on-line marketplace for financial trading of virtual currency, digital currency, cryptocurrency, digital tokens and blockchain tokens; providing and updating a financial index; providing financial indices in the nature of quantitative measurements to evaluate investments, market trends and financial instruments; providing financial indices (‘Applicant’s Goods and Services’)
Trade Mark:	BITWISE	(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘SGP’) on 25 February 2022.  The SGP raised grounds of opposition under ss 42(b), 43, 44[2] and 60.  Following the expiry of a cooling off period, the Applicant filed a Notice of Intention to Defend on 19 May 2023. 

   [2] As the Opponent relied on protected international trade mark applications as the basis of this ground of opposition, the technical ground of opposition is under reg 4.15A of the Regulations rather than s 44 of the Act. However, as the terms are substantively identical for all relevant purposes and for ease of reading, I have retained the reference to s 44 in this decision. References to s 44 as considered in the present decision should be taken to read reg 4.15A and the Opponent’s Trade Marks (as defined later in the decision) should be recognised as a protected international trade mark applications.

   Evidence

3. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Anastasiia Litvenenko, Junior Counsel of the Opponent (‘Litvenenko declaration’)	22 August 2023	WISE-1 to WISE-23
Evidence in answer
None filed
Evidence in reply
None filed

1. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  On 18 December 2023 the Opponent requested an oral hearing.  The matter was set down for a hearing by video-conference on 15 October 2024 and the matter was allocated to me.  In line with usual practice, a notice was sent to the parties on 8 August 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 1 October 2024 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 8 October 2021 (‘Applicant’s Submissions’).  At the hearing Lucy Davis of Counsel, instructed by Maria Sun and Charlie Crawford of Ashurst represented the Applicant and Andrew Sykes of Counsel instructed by Adrian Trioli and Noelene Treloar represented the Opponent, both appearing by video-conference.

2. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the   application was opposed has been established. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.

   The Opponent

3. The Opponent is a United Kingdom company, founded in 2010/11, that provides, amongst other things, currency exchange services.  

4. The Opponent is the owner of the trade mark applications (that have priority over the Trade Mark) listed below (‘Opponent’s Trade Marks’).  The goods and services for which the Opponent’s Trade Marks have been applied for are collectively referred to as the ‘Opponent’s Goods and Services’. 

Number	Trade Mark	Priority Date	Goods or Services
2098556	Endorsement: The trade mark is limited to the colours dark blue, light blue and white as shown in the representation attached to the application form.	6 May 2020	Class 9: Credit, debit, bank and monetary cards; encoded cards; smart cards; magnetic payment cards; all the aforesaid limited for use in transactions for the electronic transfer of funds, payment of money, monetary transfers and banking via a telecommunications system or an on-line system, including via a global telecommunications network Class 36: Monetary affairs including those relating to the transfer of funds and providing methods for payment including providing pre-paid methods of payment and monetary credit for others; foreign currency trading, exchange, payments, conversions, accounts and transfers; electronic money transfers; electronic foreign currency payment processing; electronic money services; electronic money transfer of foreign currency; internet accounts and banking; on-line cash accounts, banking and providing pre-paid methods of payments and monetary credit for others; checking and savings account services for foreign currency accounts; the provision of information, consultancy and advice relating to the aforesaid; all the aforesaid limited to transaction services for the electronic transfer of funds, payment of money, monetary transfers and banking via a telecommunications system or an on-line system, including via a global telecommunications network
2176471	17 Feb 2021	Class 9: Computer software; application software; computer hardware, apparatus and instruments relating to devices for payment, money, monetary transfers and banking; card readers; payment terminals; money dispensing and sorting devices; credit, debit, bank and monetary cards; encoded cards; smart cards; magnetic payment cards; computer software and application software relating to all of the aforesaid and the electronic transfers of funds. Class 36: Financial affairs; financial services; investment services; fund investment services; monetary affairs; monetary affairs including those relating to the transfer of funds and providing methods for payment including providing pre-paid methods of payment and monetary credit for others; banking services; foreign currency trading, exchange, payments, conversions, accounts and transfers; electronic money transfers; electronic foreign currency payment processing; electronic money services; electronic money transfer of foreign currency; financial transactions; financial transactions including effectuating the transfer of funds and banking services and facilitating transactions involving electronically stored monetary value; financial advice; internet accounts and banking; on-line cash accounts, banking and providing pre-paid methods of payments and monetary credit for others; checking and savings account services for foreign currency accounts; credit bureau services; debit account services; credit account services; financial analysis and research services; financial credit scoring services; the provision of information, consultancy and advice relating to the aforesaid.

1. The Opponent is also the owner of the trade mark registrations listed below (‘Transferwise Marks’). They are not particularised for the s 44 ground of opposition but are relevant for the ss 42(b) and 60 grounds as particularised.

Number	Trade Mark	Priority Date	Goods or Services
10.     1720657	Endorsement: Colour Claimed: LIGHT BLUE and DARK BLUE.; Parts Colour Claimed: TransferWise in DARK BLUE and the flag logo in LIGHT BLUE.	4 Mar 2015	Class 36: Financial affairs; monetary affairs; financial services including foreign currency trading, exchange and transfers; electronic money transfers; financial transactions relating to all of the aforesaid; the provision of information, advice and consultancy relating to all of the aforesaid
11.     1950339	Endorsement: Colour Claimed: BLUE, LIGHT BLUE and WHITE..	26 Sept 2017	Class 36: Financial services including on-line cash accounts and banking; monetary affairs; electronic foreign currency payment processing; foreign currency exchange; electronic money transfer of foreign currency; foreign currency bank accounts; electronic money services; financial transactions; the provision of information and advice relating to the aforesaid
12.     2147020 13.	TRANSFERWISE (‘Transferwise Word Mark’)	22 Sep 2020	14.   Class 9: Computer software; application software; computer hardware, apparatus and instruments relating to devices for payment, money, monetary transfers and banking; card readers; payment terminals, money dispensing and sorting devices; credit, debit, bank and monetary cards; encoded cards; smart cards; magnetic payment cards; computer software and application software relating to all of the aforesaid and the electronic transfers of funds. 15.   Class 36: Financial affairs; monetary affairs; monetary affairs including those relating to the transfer of funds and providing methods for payment including providing pre-paid methods of payment and monetary credit for others; banking; financial services including foreign currency trading, exchange, payments, conversions, accounts and transfers; electronic money transfers; electronic foreign currency payment processing; electronic money services; electronic money transfer of foreign currency; financial transactions; financial transactions including effectuating the transfer of funds and banking services and facilitating transactions involving electronically stored monetary value; financial services including internet accounts and banking; financial services including on-line cash accounts, banking and providing pre-paid methods of payments and monetary credit for others; checking and savings account services for foreign currency accounts; the provision of information, consultancy and advice relating to the aforesaid; financial services; investment services; fund investment services; banking services; financial advice; credit bureau services; debit account services; credit account services; financial analysis and research services; financial credit scoring services; the provision of information, consultancy and advice relating to the aforesaid.

1. The relevant claims/statements in the Litvenenko declaration can be summarised as set out below.  I note that references in the declaration to the Opponent includes references to the Opponent’s related entities, including its Australian subsidiary:

   ·     The Opponent provides innovative currency exchange services.  From 2011 to February 2021 the Opponent traded under the trading name and brand TRANSFERWISE, before adopting its current branding and changing its name to Wise Payments Limited on 25 June 2021.  Since February 2021 it has traded under the Opponent’s Trade Marks and under the word mark WISE.  In Australia it provides a service allowing Australian customers to make cross-border transfers in Australian dollars and offers a debit card, linked to the Opponent’s multi-currency account.

   ·     The Opponent has become well-known globally under the name ‘TRANSFERWISE’ with total volume of transactions reaching GBP1 billion per month from 2017 onwards.  Approximately 16 million people worldwide have used the Opponent’s services including significant companies.   The Opponent’s revenue has increased significantly from GBP 66 million in 2017 to GBP 846 million in 2023.  The Opponent has 5000 employees spread across 17 offices and in 2021 listed on the London stock exchange at value of GBP 9 billion.  The Opponent has entered into significant partnerships with third party companies, including, in Australia, with Up Bank (launched in 2020) and Papera and Prospend (both launched in 2023).

   ·     The Opponent has marketed its services from its website at (from 2010 to 2021) and subsequently (from 2021) from   It has spent a significant amount of money on advertising, increasing from GBP 9.37 million in 2015 to GBP 28.2 million in 2023, mainly in the digital space, such as YouTube and on social media platforms.  It has also participated in or sponsored a number of fintech conferences and received various awards.

2. The annexures to the Litvenenko declaration display various marketing materials that use the Opponent’s Trade Marks, Transferwise Marks and the WISE word mark in various formats.  I note that much of the Opponent’s evidence, including evidence of visits to its website and advertising material is global and postdates the relevant date and thus is of limited value in determining the reputation of the Opponent and its marks in Australia at the relevant date.   

   The Applicant

3. The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register. 

   Grounds of Opposition, Onus and Standard of Proof

4. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 43, 44 and 60 but in its written submissions indicates that it does not press the ground under s 43.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.  

5. The onus of proof in an opposition rests upon the Opponent.[3]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4] The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[5]

   [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [4] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

6. The relevant provisions of s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)            a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)           a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1: For deceptively similar see section 10.
   Note 2: For similar goods see subsection 14(1).

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)            a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)           a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1: For deceptively similar see section 10.
   Note 2: For similar services see subsection 14(2).
   Note 3: For priority date see section 12.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)            the similar goods or closely related services; or

   (ii)           the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
   Note 2: For predecessor in title see section 6.
   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1) and (2), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered[6] by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods/services, and/or goods/services which are closely related to, the Applicant’s Goods and Services (‘the third requirement’).

   [6] or an international registration designating Australia protected or sought to be protected.

2. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, there are other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. In the present case as the Applicant has provided no evidence of use prior to the relevant date or other circumstances that would make registration of the Trade Mark proper it is not necessary to consider these provisions.

3. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks.  While noting that the marks are currently under examination, each of the Opponent’s Trade Marks has a priority date that is earlier than the priority date of the Trade Mark.  In addition, I am satisfied that the various Class 36 financial services for which the Opponent’s Trade Marks are sought to be registered are similar to a portion of the Applicant’s Class 36 services, being financial services.

   Substantially identical and/or deceptively similar

4. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Marks.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[7]

   [7] [1963] HCA 66, [12].

5. The Trade Mark and the Opponent’s Trade Marks are set out below:

   BITWISE                       

6. On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of each of the Opponent’s Trade Marks and the Trade Mark. Indeed the only common element is the shared use of the word ‘wise’, noting that the flag device and stylistic elements in the Opponent’s Trade Mark are not reproduced in the Trade Mark.  I move then to consider whether the Trade Mark and Opponent’s Trade Marks are deceptively similar.

7. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[8]

   [8] Ibid [13].

8. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[9] conveniently stated the relevant principles, which were summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[10] as follows:

   [9] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).

   [10] [2023] FCA 482, [55] (Jackman J).

   (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[11]

   [11] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ) (‘Swancom’).

   (b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[12]

   [12] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

   (c)the marks should not be compared side by side;[13]

   (d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[14]

   (e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[15]

   (f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[16]

   (g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[17]

   (h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [18]

   (i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[19]

   (j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[20]

   (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[21] and

   (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[22]

   [13] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

   [14] Ibid.

   [15] Ibid.

   [16] Swancom (n 11), [70], [77]-[80].

   [17] Shell (n 7), [12].

   [18] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

   [19] Campomar Sociedad Limitada v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

   [20] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J), 594-595 (Kitto J) (‘Southern Cross’).

   [21] Australian Woollen Mills (n 13), 658.

   [22] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) (‘Hashtag Burgers’) citing Australian Woollen Mills (n 13), 657.

9. Furthermore the Court, in the same case, noted the following[23]:

   In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[24]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[25], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[26]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark.[27]

   [23] Self Care (n 9), [33].

   [24] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (emphasis added) (Gummow J) (‘New South Wales Dairy’), approved in CA Henschke & Co and Others v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [44] (Ryan, Branson and Lehane JJ) (‘Henschke’), Hashtag Burgers (n 22),  [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598, [97] (see also 626 [111]) and Swancom (n 11), [73].

   [25] Act, s 68.

   [26] New South Wales Dairy (n 24), 589.

   [27] Swancom, [89]. See also Henschke (2000) 52 IPR 42, 62 [44].

10. As stated above, for the purposes of considering deceptive similarity, the reputation of the Opponent’s Trade Mark is not a relevant factor.[28]

    [28] See Swancom (n 11), [93] (Yates, Abraham and Rofe JJ) and, albeit in the s120(1) context; Self Care, [49].

11. Justice French expressed the view in Registrar of Trade Marks v Woolworths Ltd[29] (‘Woolworths’) that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths matter that, ‘[t]he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[30]

    [29] Woolworths (n 20), [39].

    [30] Ibid. See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).

12. Consideration of the question of deceptive similarity proceeds from a premise that is hypothetical rather than actual.[31]  But, importantly, the hypothesis is knowledge of the mark as registered, that is the particular form of the Opponent’s Marks, even though in undertaking the analysis of deceptive similarity allowance must be made for the imperfect recollection of those marks. In the present case, the hypothesis is that the intending acquirers of the Applicant’s Goods and Services know, but may have an imperfect recollection of, the particular composite form of the Opponent’s Marks, not just knowledge of, and an imperfect recollection of, the word ‘wise’.

    [31] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [97] (Yates J).

13. Noting that the word ‘wise’ is laudatory as it would be seen as descriptive of the customers of the respective goods and services, I do not accept the Opponent’s submissions that the WISE word element is the dominant cognitive cue in both marks; rather both marks are to be assessed as a whole.  While both marks contain the word ‘wise’, this is not a case where the Trade Mark wholly incorporates the Opponent’s Trade Marks. The Opponent’s Trade Marks are not for the word ‘wise’ solus but are composite marks which both contain a prominent flag device at the beginning of the mark and stylisation. In the absence of such elements, the mere word ‘wise’ may not be registrable as a mark for the Opponent’s Goods and Services because it is laudatory.

14. In the present case, the key similarity between all the marks is the shared word ‘wise’ which constitutes a portion of all the trade marks, the Trade Mark being a compound word comprising the terms ‘bit’ and ‘wise’ while the Opponent’s Trade Marks contain the word ‘wise’ along with the flag device and various stylisations. In light of the laudatory nature of the word ‘wise’ in the context of the goods and services for which the Trade Mark and the Opponent’s Trade Marks are sought to be registered, being financial services and related goods, the presence of the common element ‘wise’ ought to be given less weight in considering whether the respective marks are deceptively similar. 

15. Justice Stephen observed[32] in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (‘Hornsby Building’) that:

    There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.[33]

    [32] Albeit in relation to trade practices.

    [33] 140 CLR 216, 229.

16. Further, in my opinion the flag device in the Opponent’s Marks cannot be ignored.  It is not an insignificant device, being at the beginning of the Opponent’s Marks and being the same size as the lettering of the word ‘wise’. The flag device is an element of the Opponent’s Marks which the ordinary consumer would not fail to recall. 

17. Where the registered mark is a composite mark consisting of a number of elements, all its elements must be considered in undertaking a trade mark comparison.[34]  There are significant differences between the respective marks, including the presence of the first element ‘bit’ in the Trade Mark and the flag device and stylisation in the Opponent’s Trade Marks.  As a result, the marks look quite different, are pronounced differently, and have only a limited conceptual similarity (one being a laudatory term and the other being the laudatory term in conjunction with [and which hence refers to and modifies] the word ‘bit’).  While I acknowledge the Opponent’s Submissions that ‘bit’ is an ordinary English word with a number of meanings, including in respect of financial services, I do not consider it descriptive of any of the services. At best it is allusive to the cryptocurrency services the Applicant seeks to offer under the Trade Mark and hence should not be discounted significantly in the context of the comparison of the marks.  Furthermore, a finding of deceptive similarity in this case would in effect infer that the Opponent has a monopoly on the use of the laudatory term ‘wise’ in respect of financial services and other similar services and closely related goods.  The Opponent does not have such a monopoly and has not registered or sought to register the word mark ‘wise’ as a mark.  Any confusion that might occur stems from the use of the descriptive term in the respective marks and not from the deceptive similarity of the parties’ trade marks within the meaning of the term. 

    [34] Australian Meat Group Pty Ltd v JBS Australia Pty Ltd [2018] FCAFC 207 [78] (Allsop CJ; Besanko and Yates JJ).

18. I find that the Opponent has failed to establish the ground of opposition under s 44.

    Section 60

19. Section 60 is reproduced below:

    Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

20. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

21. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

    The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

    The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[35]

    [35] [2023] FCA 487, [20]-[21] (Kennett J)

22. In McCormick & Co Inc v McCormick[36], Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[37]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[38]

    [36] [2000] FCA 1335.

    [37] Ibid, [81].

    [38] (1992) 33 FCR 302, 343.

1. On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[39]

   [39] (1999) 47 IPR 423, 436.

2. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[40] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[41]

   [40] [2000] FCA 1587.

   [41] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

3. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   The Opponent has acquired a reputation in Trade Mark Application No. 2098556 and Trade Mark No. 2176471 and its common law marks incorporating the sign “WISE”, including for goods and services in classes 9 & 36. The filing in Australia of Trade Mark Application No. 2098556, Trade Mark Application No. 2176471 and the first use of the common law marks of the Opponent was all before the filing date of the Applicant’s Mark. Since 2011, the Opponent has been using trade marks using the element “WISE” in Australia and has acquired a reputation in Australia and globally in respect of trade marks having the element “WISE” for similar goods and services covered by the Applicant's mark including Trade Mark No’s. 1720657, 1950339 & 2147020.  

4. I find the manner in which the Opponent has particularised this ground of opposition to be unsatisfactory. When particularising the s 60 ground of opposition, the Applicant is entitled to know which trade marks the Opponent asserts it has a reputation in. It is entirely acceptable to refer to particular trade mark applications or registrations, such as the Opponent’s Trade Marks and the Transferwise Marks. However asserting reputation in ‘its common law marks incorporating the sign “WISE”’ and ‘marks having the element “WISE”’ does not provide the Applicant with sufficient notice of what marks the Opponent relies upon since this could include literally any term that contains the term ‘wise’. In the interest of procedural fairness I treat this ground as being particularised in respect of the Opponent’s Trade Marks and the Transferwise Marks, and not in respect of any other marks, including ‘WISE’ solus. To the extent that the Opponent makes references and submissions concerning the WISE word mark solus or other marks or a broader submission of reputation in any and all marks containing the ‘WISE’ element, I have disregarded them.

5. I am not satisfied, on the evidence before me, that the Opponent had acquired a reputation in Australia for the Opponent’s Trade Marks at the relevant date, sufficient for the requirements under s 60(a).[42]  The Opponent had adopted the Opponent’s Trade Marks approximately one month prior to the relevant date, which is manifestly insufficient time to establish reputation in Australia (noting my comments in the paragraph below about the limited evidence of reputation in Australia generally).  While there is evidence about the number of visitors to the Opponent’s website in the month between the announcement and the relevant date, this evidence does not show the number of visitors from Australia and hence it cannot establish reputation in Australia.  I do not accept the Opponent’s submissions (at paragraph 36) that the removal of the word ‘transfer’ from the Opponent’s ‘WISE’ marks amounted to an insignificant difference; the Opponent’s Trade Marks and Transferwise Marks are obviously not substantially identical and reputation in the Transferwise Marks does not transfer to the Wise Marks.

   [42] For completeness, had I considered this ground in respect of the word mark WISE, I would have reached the same conclusion, namely that the Opponent lacked reputation in the word mark WISE (solus) at the relevant date.

6. With respect to the Transferwise Marks, I note that the evidence of reputation and use of these marks in Australia, as opposed to globally, is very limited. The Opponent provides no evidence of its customer base, website visits or advertising in Australia as of the relevant date, and I note that the initial partnership in Australia with a local financial service provider was only launched approximately 6 months before the relevant date. The Opponent refers to its partnership with Up Bank as receiving exposure from 15 October 2019 and generating 130,000 Australian customers, however that partnership only commenced in 2020 and did not generate 130,000 additional customers; rather it provided the platform for the Opponent to offer its services to those customers (and there is no evidence how many of the 130,000 customers used the Opponent’s services). However, while noting the limited evidence provided by the Opponent of use in Australia, I am satisfied on the evidence before me that the Transferwise Marks had, before the relevant date, acquired a limited reputation in Australia for currency exchange or monetary transfer services, sufficient for the requirements under s 60(a). I reach this conclusion noting the length of time the Opponent had used the Transferwise Marks globally, the significant global reputation in the marks and the fact that the target audience for the Opponent’s currency exchange services are individuals and businesses who travel frequently and/or send money globally, and hence are likely to be more aware of the Opponent’s significant international reputation than the average Australian consumer of financial services. I also note that the Opponent had won a number of awards in Australia for its services, evidencing at least some esteem in the local market. I do not find the Opponent’s reputation extends beyond currency exchange/monetary transfer services; there is simply minimal evidence of the penetration of the Opponent’s other financial products in the Australian market at the relevant date.

7. It is not sufficient that the Opponent merely establish that its Transferwise Marks had a reputation; it must also be satisfied that, because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning trade mark infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.[43]

   [43] Australian Woollen Mills (n 13), 658.

8. In Woolworths French J highlighted the following further matters concerning confusion:

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[44]

   [44] [1999] FCA 1020, [25]. These considerations by French J are based on principles set out by Kitto J in Southern Cross (n 20) (1954) 91 CLR 592, 594-5.

9. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[45]

   [45] [2012] ATMO 124, [40] (Hearing Officer Thompson).

10. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[46]

    [46] [2016] FCA 729, [142] (Yates J).

11. Finally I note that in considering whether there is a likelihood of confusion, I must consider the notional use of the Trade Mark by the Applicant, rather than actual use or any reputation in the Trade Mark held by the Applicant.[47]

    [47] See, for example, McCormick & Company Inc v McCormick [2000] FCA 1335 where it was established that the fact that the Applicant might have been an honest concurrent user is not relevant to the operation of section 60.

12. In the present case, I need only consider the Transferwise Word Mark; the other marks that comprise the Transferwise Marks contain additional elements that further distinguish them from the Trade Mark. Were I to find that confusion does not arise by means of the reputation in the Transferwise Word Mark, I would reach a similar confusion with the remaining Transferwise Marks.

13. In the present case, to the extent that the Trade Mark and the Transferwise Word Mark are similar, it is largely due to the presence of the common element ‘wise’ which (contrary to the Opponent’s Submissions which submit that it is the shared dominant cognitive cue) can be seen as laudatory in respect of the Applicant’s Goods and Services and the services for which the Transferwise Word Mark has a limited reputation.  I refer to the statements made by Stephen J in Hornsby Building[48] extracted at paragraph 35 above regarding the risk of confusion that must be accepted as a price to be paid for the advantages of a descriptive trade name. 

    [48] Hornsby Building (n 33), 229.

14. Furthermore, I note the presence of the first elements ‘bit’ and ‘transfer’ in the respective marks results in two marks that are significantly visually, aurally and conceptually different.  While I acknowledge that term ‘transfer’ is descriptive of the services the Opponent had reputation in, it is not appropriate to discount it in the present case where the ‘wise’ element is laudatory; rather I must consider the Transferwise Word Mark as a whole.  In the present case I am not satisfied that any confusion that could arise between the Trade Mark and the Transferwise Word Mark would arise because of the (limited in Australia at the relevant date) reputation of the Transferwise Word Mark, as opposed to the shared use of the laudatory term ‘wise’ in respect of currency exchange/monetary transfer services.

15. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

    Section 42

16. Section 42 is reproduced below:

    42 - Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:
    (a) the trade mark contains or consists of scandalous matter; or
    (b) its use would be contrary to law.

17. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[49]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[50]

    [49] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

    [50] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

18. The Opponent has particularised the ground of opposition in the SGP as follows: 

    The use of the Applicant’s Mark is likely to mislead or deceive persons by erroneously (i) suggesting a connection or affiliation between the Applicant and the Opponent, or (ii) that the Applicant’s goods and services are provided by or with the sponsorship or approval of the Opponent, and constitute misleading and deceptive conduct contrary to sections 18 and 29 of the Australian Consumer Law as per Schedule 2 of the Competition and Consumer Act 2020 (Cth) and/or the common law action of passing off.

19. I first note that I consider the particularisation of this ground to be entirely unsatisfactory; the Opponent particularises that the use of the Trade Mark would be contrary to sections 18 and 29 of the Australian Consumer Law and the common law action of passing off but provides essentially no particulars as to why this would be the case, noting that the matters at (i) and (ii) above virtually restate the requirements of the common law action of passing off and do nothing more than confine the Australian Consumer Law claims as relating to confusion between the Opponent and the Applicant rather than a third party and the Applicant. The Applicant is entitled to know the case against it before determining whether to file a notice of intention to defend and evidence, and in the absence of clear particulars identifying why use of the Trade Mark would be contrary to law, I am entitled to find that this ground is not established.

20. However, it is not necessary to take the step above. It is apparent, following a review of the evidence and other particulars, that the Opponent relies on reputation in and use of similar marks particularised under the s 60 ground. As previously stated the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[51] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

    [51] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

21. Paraphrasing the statement of the Registrar’s delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[52], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Justice Beaumont considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[53] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

    The scope for the operation of s. 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s. 52 or s. 53 will invariably mean that proceedings for passing off would likewise fail.[54]

    [52] [2014] ATMO 65, [50] (Hearing Officer Wilson).

    [53] [2003] FCA 104, [107] (Beaumont J).

    [54] [1989] FCA 506, [40] (citations omitted).

22. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law.  Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

    Decision and Costs

23. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2167015 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

24. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    3 December 2024